I hereby certify that this paper (along with any paper referred to as being attached
`or enclosed) is being transmitted via the Office electronic filing system in
`accordance with 37 CFR § 1.6(a)(4).
`
`
`
`EgtgfonicASighafuricfb?Matthew H. Grady:
`
`/Matthew H. Grady/
`
`DOCket NO‘: W05(3:70062())
`
`P TENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`In re Patent Application of:
`Kenneth P. Weiss
`
`Application No.: 11/768,729
`
`Confirmation No.: 3536
`
`Filed: June 26, 2007
`
`Art Unit: 2435
`
`
`
`For: UNIVERSAL SECURE REGISTRY Examiner: B. W. Dada
`
`AMENDMENT AFTER FINAL ACTION UNDER 37 C.F.R. 1.116
`
`Commissioner for Patents
`
`Dear Madam:
`
`INTRODUCTORY COMMENTS
`
`In response to the Office Action mailed on December 18, 2012, please amend the above-
`
`identified application as follows: Changes to the claims are shown by strike through (for deleted
`
`matter) and underlining (for added matter).
`
`Amendments to the Claims are reflected in the listing of claims which begins on page 2
`
`of this paper.
`
`Remarks/Arguments begin on page 10 of this paper.
`
`APPLE 1118
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`APPLE 1118
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`After Final Office Action of December 18, 2012
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`Docket No.2 W0537—70062O
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`AMENDMENTS TO THE CLAIMS
`
`This listing of claims will replace all prior versions, and listings, of claims in the
`application.
`
`Listing of Claims:
`
`1.
`
`(Currently Amended) A secure registry system for providing information to a first party
`
`to enable transactions between the first party and entities with secure data stored in the secure
`
`registry system, the secure registry system comprising:
`
`a database including secure data for each entity, wherein each entity is associated with a
`
`time-varying multicharacter code for each entity having secure data in the secure registry
`
`system, respectively, each time-varying multicharacter code representing an identity of one of
`
`the respective entities; and
`
`a processor configured to receive, from the first party, at least the time-varying
`
`multicharacter code for the entity on whose behalf a transaction is to be performed, configured to
`
`map the time-varying multicharacter code to the identity of the entity in the database using only
`
`the time-varying multicharacter code, to execute a restriction mechanism configured to
`
`determine compliance with any access restrictions for the first party, and to access secure data
`
`associated with the entity including information required to enable the transaction, the
`
`information including account identifying information where the account identifying information
`
`is unknown to the first party, to provide the account identifying information to a third party to
`
`enable the transaction without providing the account identifying information to the first party.
`
`2.
`
`3.
`
`(Canceled)
`
`(Previously Presented) The system of claim 1, wherein the time-varying multicharacter
`
`code is provided to the system via a secure electronic transmission device.
`
`4.
`
`(Previously Presented) The system of claim 1, wherein the time-varying multicharacter
`
`code is encrypted and transmitted to the system, and
`
`wherein the system is configured to decrypt the time-varying multicharacter code with a
`
`public key of the entity.
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`5.
`
`(Previously Presented) The system as claimed in claim 1, wherein the transaction
`
`includes a service provided by the first party,
`
`wherein said first party’s service includes delivery,
`
`wherein the information is an address to which an item is to be delivered to the entity,
`
`wherein the system receives the time-varying multicharacter code, and
`
`wherein the system uses the time-varying multicharacter code to obtain the appropriate
`
`address for delivery of the item by the third party.
`
`6.
`
`7.
`
`8.
`
`9.
`
`(Canceled)
`
`(Canceled)
`
`(Canceled)
`
`(Previously Presented) The system as claimed in claim 1, wherein the account identifying
`
`information includes credit card account information regarding the entity, and wherein the
`
`processor is configured to provide the credit card account information based upon the
`
`multicharacter code of the entity to enable the transaction.
`
`10.
`
`(Previously Presented) The system as claimed in claim 9, wherein the system is
`
`configured to receive an approval of the credit card transaction.
`
`11.
`
`(Previously Presented) The system as claimed in claim 1, wherein the account identifying
`
`information includes bank card account information regarding the entity, and wherein the
`
`processor is configured to provide the bank card account information to enable the transaction
`
`based upon the multicharacter code of the entity.
`
`12.
`
`(Previously Presented) The system as claimed in claim 11, wherein the system is
`
`configured to provide an approval of the bank card transaction.
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`13.
`
`(Previously Presented) The system as claimed in claim 1, wherein the information
`
`includes personal identification information regarding the entity.
`
`14.
`
`(Previously Presented) The system as claimed in claim 13, wherein the personal
`
`identification information comprises a photograph of the entity, and wherein the photograph is
`
`provided to the first party.
`
`15.
`
`(Previously Presented) The system as claimed in claim 1, wherein the account identifying
`
`information identifies email address information regarding the entity.
`
`16.
`
`(Previously Presented) A method for providing information to a first party to enable
`
`transactions between the first party and entities who have secure data stored in a secure registry
`
`in which each entity is identified by a time-varying multicharacter code, the method comprising:
`
`receiving the time-varying multicharacter code for an entity on whose behalf a
`
`transaction is to take place;
`
`mapping the time-varying multicharacter code to an identity of the entity in a database
`
`using only the time-varying multicharacter code;
`
`determining compliance based on any access restrictions for the first party;
`
`accessing information required to perform the transaction, the information including
`
`account identifying information unknown to the first party;
`
`providing the account identifying information to a third party without providing the
`
`account identifying information to the first party; and
`
`using the account identifying information to enable the first party to perform the
`
`transaction without the first party’s knowledge of the account identifying information.
`
`17.
`
`(Canceled)
`
`18.
`
`(Canceled)
`
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`19.
`
`(Previously Presented) The method of claim 16, wherein the act of receiving the time-
`
`varying multicharacter code comprises receiving the time-varying multicharacter code
`
`transmitted via a secure electronic transmission device.
`
`20.
`
`(Previously Presented) The method of claim 16, wherein the act of receiving the time-
`
`varying multicharacter code comprises receiving an encrypted multicharacter code, and
`
`wherein the method further comprises decrypting the encrypted multicharacter code.
`
`21.
`
`(Previously Presented) The method as claimed in claim 16, wherein the transaction
`
`includes a service provided by the first party,
`
`wherein the service includes delivery,
`
`wherein the account identifying information is associated with an address to which an
`
`item is to be delivered for the entity, and
`
`wherein the third party receives the address for delivery of an item provided by the first
`
`party.
`
`22.
`
`(Canceled)
`
`23.
`
`(Canceled)
`
`24.
`
`(Previously Presented) The method as claimed in claim 16, wherein the account
`
`identifying information includes a credit card number, and wherein the act of using the account
`
`identifying information comprises using the credit card number to enable the transaction.
`
`25.
`
`(Previously Presented) The method as claimed in claim 24, wherein the act of using the
`
`account identifying information comprises receiving a validation or denial of the transaction
`
`without providing the credit card number of the entity to the first party.
`
`26.
`
`(Previously Presented) The method as claimed in claim 16, wherein the act of using the
`
`account identifying information comprises using bank card information about the entity to
`
`enable a transaction.
`
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`27.
`
`(Previously Presented) The method as claimed in claim 26, wherein the act of using the
`
`information comprises receiving a validation or denial of the bank card transaction without
`
`providing a bank card number of the entity to the first party.
`
`28.
`
`(Previously Presented) The method as claimed in claim 16, wherein the act of mapping
`
`the time-varying multicharacter code to information required by the first party comprises
`
`mapping the time-varying multicharacter code to personal identification information about the
`
`entity.
`
`29.
`
`(Previously Presented) The method as claimed in claim 28, wherein the personal
`
`identification information comprises a photograph of the entity, and
`
`wherein the method further comprises an act of providing the photograph to the first
`
`party.
`
`30.
`
`(Previously Presented) The method as claimed in claim 16, wherein the account
`
`identifying information identifies email address information about the entity.
`
`31.
`
`(Canceled).
`
`32.
`
`(Previously Presented) The method as claimed in claim 24, further comprising an act of
`
`transmitting to the first party one of an approval or a denial of the credit card transaction.
`
`33.
`
`(Previously Presented) The system of claim 1, wherein the database is further configured
`
`to associate biometric information with each entity having secure data in the secure registry,
`
`respectively.
`
`34.
`
`(Previously Presented) The system of claim 33, wherein the processor is further
`
`configured to map the time-varying multicharacter code to biometric information associated with
`
`the entity on whose behalf the transaction is to be performed and to provide the biometric
`
`information to the first party.
`
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`35.
`
`(Previously Presented) The system of claim 34, wherein the biometric information
`
`includes an image of the entity on whose behalf the transaction is to be performed.
`
`36.
`
`(Previously Presented) The system of claim 34, wherein the time-varying multicharacter
`
`code is generated by a device associated with the entity on whose behalf the transaction is to be
`
`performed.
`
`37.
`
`(Previously Presented) The method as claimed in claim 16, further comprising an act of
`
`associating biometric information with each entity having secure data in the secure registry,
`
`respectively.
`
`38.
`
`(Previously Presented) The method of claim 37, further comprising acts of:
`
`mapping the time-varying multicharacter code to biometric information associated with
`
`the entity on whose behalf the transaction is to be performed; and
`
`providing the biometric information to the first party.
`
`39.
`
`(Previously Presented) The method of claim 38, wherein the biometric information
`
`includes an image of the entity on whose behalf the transaction is to be performed.
`
`40.
`
`(Canceled).
`
`41.
`
`(Previously Presented) The system of claim 1, wherein the account identifying
`
`information includes an account number.
`
`42.
`
`(Previously Presented) The system of claim 41, wherein the account identifying
`
`information includes credit card account information and the account number includes a credit
`
`card number.
`
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`43.
`
`(Previously Presented) The system of claim 41, wherein the third party includes a
`
`financial service provider and the account number includes at least one of a debit card number
`
`and a credit card number.
`
`44.
`
`(Currently Amended) The system of claim 43, wherein the first party includes a
`
`merchant, and the service includes a sale of at least one of goods and services.
`
`45.
`
`(Previously Presented) The system of claim 44, wherein the processor is further
`
`configured to receive, from the first party, a merchant ID, and a purchase amount.
`
`46.
`
`(Previously Presented) The system of claim 1, wherein the identity of the entity is
`
`unknown until the time-varying code is mapped to the identity by the processor.
`
`47.
`
`(Currently Amended) A secure registry system for providing information to a first party
`
`to enable transactions between the first party and entities with secure data stored in the secure
`
`registry system, the secure registry system comprising:
`
`a database including secure data for each entity, wherein each entity is associated with a
`
`time-varying multicharacter code for each entity having secure data in the secure registry
`
`system, respectively, each time-varying multicharacter code representing an identity of one of
`
`the respective entities, wherein the database is configured to permit or deny access to
`
`information on the respective entity using the time-varying multicharacter code; and
`
`a processor configured to receive, the time-varying multicharacter code for the entity on
`
`whose behalf a transaction is to be performed, configured to map the time-varying
`
`multicharacter code to the identity of the entity to identify the entity, configured to execute a
`
`restriction mechanism configured to determine compliance with any access restrictions for the
`
`first party, configured to obtain from the database the secure data associated with the entity
`
`including information required to enable the transaction, the information including account
`
`identifying information, and configured to provide the account identifying information to a third
`
`party to enable the transaction without providing the account identifying information to the first
`
`party.
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`After Final Office Action of December 18, 2012
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`48.
`
`(Currently Amended) A secure registry system for providing information to a first party
`
`to enable transactions between the first party and entities with secure data stored in the secure
`
`registry system, the secure registry system comprising:
`
`a database including secure data for each entity, wherein each entity is associated with a
`
`time-varying multicharacter code for each entity having secure data in the secure registry
`
`system, respectively, each time-varying multicharacter code representing an identity of one of
`
`the respective entities; and
`
`a processor configured to receive the time-varying multicharacter code for the entity on
`
`whose behalf a transaction is to be performed, configured to map the time-varying
`
`multicharacter code to the identity of the entity without requiring further information to identify
`
`the entity, configured to access from the database secure data associated with the entity
`
`including information required to enable the transaction, the information including account
`
`identifying information, and configured to provide the account identifying information to a third
`
`party to enable the transaction without providing the account identifying information to the first
`
`party, and wherein enabling the transaction without providing account identifying information to
`
`the first party includes limiting the account identifying information provided by the secure
`
`registry system to the first party to transaction approval information.
`
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`Amendment dated April 12, 2013
`After Final Office Action of December 18, 2012
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`
`Docket No.2 W0537—700620
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`REMARKS
`
`Claims 1, 3-5, 9-16, 19-21, 24-30, 32-39 and 41-48 were previously pending in this
`
`application. Claims 1, 16, 44, 47 and 48 have been amended. As a result claims 1, 3-5, 9-16,
`
`19-21, 24-30, 32-39 and 41-48 are pending for examination with claims 1, 16, 47 and 48 being
`
`independent claims. No new matter has been added.
`
`Examiner Interview
`
`Applicant wishes to thank Examiner Dada for the courtesies extended to Applicant’s
`
`Representative during the course of the Interview conducted on April 9, 2013. During the
`
`course of the Interview, the participants discussed the Application, Office Action, the rejections
`
`of record and proposed amendments. In particular, Applicant proposed amendment to claim 1.
`
`Claim 1, as amended, now recites “a restriction mechanism configured to determine compliance
`
`with any access restrictions for the first party,” which is not taught or suggested by Giordano or
`
`Weiss. Although agreement as to the allowability of the claims was not reached, Examiner Dada
`
`agreed that the proposed amendments would overcome the present rejection. Accordingly,
`
`presented are the amendments to the claims discussed. Favorable consideration is respectfully
`
`requested.
`
`Re'ections Under 35 U.S.C.
`
`103
`
`The Office Action rejected claims 1, 3-5, 9-16, 19-21, 24-30, 32-39 and 41-48 under 35
`
`U.S.C. §103(a) as being unpatentable over US. Patent No. 7,571,139 B1 to Gioradano et al.
`
`(hereinafter Gioradano) in view of US. Patent No. 5,657,388 to Weiss (hereinafter Weiss). In
`
`response, Applicant has amended claims 1, 16, 47 and 48 and submits the following remarks.
`
`Applicant respectfully asserts that the claim 1, as amended, is patentable in view of the
`
`alleged combination at least because Giordano and Weiss alone or in proper combination do not
`
`teach or suggest “a restriction mechanism configured to determine compliance with any access
`
`restrictions for the first party,” as recited in claim 1, as amended.
`
`Giordano is directed to “a network for processing retail sales transactions” including “a
`
`customer transceiver with a unique customer number” (Abstract). Giordano teaches a
`
`“transaction processing system” that processes transactions with the “appropriate payment
`
`processing center” based on received authorization requests including “the customer ID,
`
`merchant ID and transaction data” (Col. 3 Lines 29-36). In summary, Giordano teaches the use
`
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`Docket No.2 W0537—70062O
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`of a customer transceiver to authorize a transaction processing system to carry out a monetary
`
`transaction between a customer and a merchant at the appropriate payment processing center.
`
`Giordano does not teach or suggest “a restriction mechanism configured to determine
`
`compliance with any access restrictions for the first party,” as recited in claim 1, as amended.
`
`Rather, Giordano teaches the use of a customer transceiver to authorize a transaction processing
`
`system to carry out a monetary transaction between a customer and a merchant at the appropriate
`
`payment processing center. Accordingly, claim 1, as amended, distinguishes over the Giordano
`
`reference.
`
`Weiss is directed to “a method and apparatus for utilizing a token” to “provide secure
`
`access by authorized users to a selected resource” (Abstract). Weiss teaches the generation and
`
`use of a one-time variable multi-character code based in part on information stored in the token
`
`to authenticate the user’s identity. Weiss does not teach or suggest “a restriction mechanism
`
`configured to determine compliance with any access restrictions for the first party,” as recited in
`
`claim 1, as amended. Rather, Weiss teaches the use of a one-time variable multi-character code
`
`based in part on information stored in a user’s token to authenticate a user. Accordingly, claim
`
`1, as amended, distinguishes over the Weiss reference.
`
`As neither Giordano nor Weiss teach or suggest this element, the combination, even if
`
`assumed proper, does not teach or suggest claim 1. Claims 3-5, 9-15, 33-36 and 41-46 depend
`
`from claim 1 and are allowable for at least the same reasons. Accordingly, withdrawal of the
`
`rejection of claims 1, 3-5, 9-15, 33-36 and 41-46 under 35 U.S.C. §103(a) is respectfully
`
`requested.
`
`Independent Claim 16
`
`Independent claim 16, as amended, recites “determining compliance based on any access
`
`restrictions for the first party.” As discussed above with respect to claim 1, Giordano teaches the
`
`use of a customer transceiver to authorize a transaction processing system to carry out a
`
`monetary transaction between a customer and a merchant at the appropriate payment processing
`
`center. Thus, Giordano does teach or suggest “determining compliance based on any access
`
`restrictions for the first party,” as recited in claim 16, as amended. Assuming the combination is
`
`proper, the addition of Weiss does not cure this deficiency as Weiss does not teach or suggest
`
`“determining compliance based on any access restrictions for the first party,” as recited in claim
`
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`After Final Office Action of December 18, 2012
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`16, as amended. Claims 19-21, 24-30, 32 and 37-39 depend from claim 16 and are allowable for
`
`at least the same reasons. Accordingly, withdrawal of the rejection of claims 16, 19-21, 24-30,
`
`32 and 37-39 under 35 U.S.C. §103(a) is respectfully requested.
`
`Independent Claim 47
`
`Independent claim 47 is also patentable in view of the alleged combination at least
`
`because Giordano and Weiss alone or in proper combination do not teach or suggest “a
`
`restriction mechanism configured to determine compliance with any access restrictions for the
`
`first party,” as recited in claim 47, as amended. As discussed above with respect to claim 1,
`
`Giordano teaches the use of a customer transceiver to authorize a transaction processing system
`
`to carry out a monetary transaction between a customer and a merchant at the appropriate
`
`payment processing center. The addition of Weiss does not cure this deficiency. Accordingly,
`
`withdrawal of the rejection of claim 47 under 35 U.S.C. §103(a) is respectfully requested.
`
`Independent Claim 48
`
`Independent claim 48, as amended, is patentable in view of the alleged combination at
`
`least because Giordano and Weiss alone or in proper combination do not teach or suggest
`
`“wherein enabling the transaction without providing account identifying information to the first
`
`party includes limiting the account identifying information provided by the secure registry
`
`system to the first party to transaction approval information,” as recited claim 48, as amended.
`
`Giordano teaches the “transaction processing system” transmitting to the online merchant
`
`“identification information and other data unique to the associated customer in the absence of a
`
`retail transaction” (See Col. 4 Lines 17-21). Giordano explicitly teaches the transmission of
`
`information regarding the user (e. g., entity or purchaser), including loyalty program information
`
`(See e.g., Col. 4 Lines 54-58), to a merchant (e. g., first party) rather than limiting the
`
`information transmitted to the merchant to transaction approval information. Accordingly,
`
`Giordano does not teach or suggest claim 48, as amended. Assuming the combination is proper,
`
`the addition of Weiss does not cure this deficiency. Weiss teaches the use of a one-time variable
`
`multi-character code based in part on information stored in a user’s token to authenticate a user.
`
`Thus, Weiss does not teach “wherein enabling the transaction without providing account
`
`identifying information to the first party includes limiting the account identifying information
`
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`provided by the secure registry system to the first party to transaction approval information,” as
`
`recited in claim 48, as amended. Accordingly, withdrawal of the rejection of claim 48 under 35
`
`U.S.C. §103(a) is respectfully requested.
`
`CONCLUSION
`
`In view of the foregoing amendments and remarks, reconsideration is respectfully
`
`requested. This application should now be in condition for allowance; a notice to this effect is
`
`respectfully requested. If the Examiner believes, after this amendment, that the application is
`
`not in condition for allowance, the Examiner is requested to call the Applicant's attorney at the
`
`telephone number listed below.
`
`If this response is not considered timely filed and if a request for an extension of time is
`
`otherwise absent, Applicant hereby requests any necessary extension of time. If there is a fee
`
`occasioned by this response, including an extension fee that is not covered by an accompanying
`
`payment, please charge any deficiency to Deposit Account No. 50/2762 (W0537-700620).
`
`Dated: April 12, 2013
`
`Respectfully submitted,
`
`/Matthew H. Grady/
`
`Electronic signature:
`Matthew H. Grady
`Registration No.: 52,957
`John N. Anastasi
`
`Registration No.: 37,765
`
`LANDO & ANASTASI LLP
`
`Riverfront Office Park
`One Main Street
`Suite 1100
`
`Cambridge, Massachusetts 02142
`(617) 395-7000
`
`Attorney for Applicant
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